Complainant is Allen & Overy LLP, United Kingdom, internally-represented.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Mary Clark, Outpost Inc, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2020. On April 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 30, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 5, 2020. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 1, 2020. The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 5, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is the owner of registration for the word trademark (and service mark) ALLEN & OVERY on the register of the European Union Intellectual Property Office (EUIPO), registration number 001500669, registration dated May 22, 2001, in International classes 16, 36, and 42, covering, inter alia, periodicals and services of lawyers. Complainant is registrant of additional ALLEN & OVERY-formative marks in the European Union and has registered its ALLEN & OVERY trademark in other jurisdictions. Complainant is a law firm based in the City of London, with more than 40 offices located across 31 countries, employing approximately 5,400 people worldwide, of whom 2,300 are lawyers. Complainant has a large client base and advises on high-profile transactions. Complainant operates a commercial website at “www.allenovery.com”. According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the disputed domain name was registered by Respondent on April 13, 2020. The disputed domain name has been used by Respondent to host a parking page with sponsored links using generic identifiers (e.g., “International Travel Insurance”, “Medical Insurance”, etc.). The parking page states that the sponsored links are provided by a third party. Respondent has also used the disputed domain name as a domain identifier to originate emails in which the username is identical to that of a partner in Complainant’s law firm.1 The email signature information appears designed to replicate that used by attorneys of the firm. The emails have been sent to at least one client of the firm stating that Complainant is in pursuit of an unpaid invoice. Complainant’s client identified the deceptive email as such. There is no specific additional information on the record of this proceeding regarding how Respondent precisely intended to pursue its scheme. The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant Complainant alleges that it owns rights in the trademark ALLEN & OVERY, and various ALLEN & OVERY-formative marks, and that the disputed domain name is confusingly similar to that trademark. Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not commonly known by the disputed domain name, is not a licensee, or otherwise authorized by Complainant to use its trademark; (2) use of the disputed domain name in connection with a parking page with sponsored links (for which Respondent presumably receives revenue) does not establish rights or legitimate interests, and; (3) using the disputed domain name as an email identifier to mislead the recipient as to the true identity of the sender, associating Respondent with Complainant, in a “phishing” scheme, does not establish rights or legitimate interests. Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant’s trademark rights predate Respondent’s registration of the disputed domain name, and Complainant is well-known, so that Respondent must have been aware of Complainant’s trademark rights when it registered the disputed domain name; (2) use of the disputed domain name in connection with a parking page with generic links does not establish a legitimate purpose for registration of the disputed domain name, particularly where, as here, Respondent is otherwise seeking to take unfair advantage of Complainant’s trademark rights; (3) Respondent’s use of the disputed domain name with the deceptive intent to profit from financial or commercial information obtained from the recipient constitutes a bad faith use of the disputed domain name. Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The Center formally notified the Complaint to Respondent at the email, fax, and physical addresses provided in its record of registration. It appears that courier delivery of the Complaint to Respondent was successful. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Each of the aforesaid three elements must be proved by a complainant to warrant relief. This proceeding involves a regrettably familiar pattern: a domain name confusingly similar to a trademark is used as a domain identifier in connection with the transmission of emails intended to deceive a recipient(s) as to the true identity of the sender, thereby to take unfair financial or other advantage of the recipient(s). In addition to potential injury to the recipient(s), such deceptive behavior is likely to injure the commercial and/or reputational interest of the trademark owner. A. Identical or Confusingly Similar Complainant has provided evidence of rights in the trademark ALLEN & OVERY, including by registration at the EUIPO and use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the trademark ALLEN & OVERY. The disputed domain name differs from Complainant’s trademark by removal of the ampersand (“&”) between the names comprising Complainant’s trademark, and by addition of the term “worldwide”. The virtually identical incorporation of Complainant’s distinctive trademark in the disputed domain name is sufficient basis for the Panel to find confusing similarity between Complainant’s trademark and the disputed domain name.2 Addition of the common geographic term “worldwide” that consumers would reasonably associate with Complainant and its business does not affect that finding. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark. The Panel determines that Complainant has established rights in the trademark ALLEN & OVERY, and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests. Respondent’s use of the disputed domain name in an email address incorporating a username identical to that of a partner in Complainant’s law firm, and using that originating email address in an attempt to deceptively obtain information from Complainant’s client, in an apparent attempt to fraudulently secure a payment from the client to Respondent, does not establish rights or legitimate interests in the disputed domain name in favor of Respondent. Respondent’s use of the disputed domain in connection with a parking page with sponsored links does not establish rights or legitimate interests in favor of Respondent. Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”. Respondent has used the disputed domain name intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source of email communications intended by Respondent to deceive a client of Complainant. The apparent intent of the deceptive emails was to induce the client to provide information and make a payment to Respondent under false pretenses. Respondent was manifestly aware of Complainant’s rights in its trademark when it registered the disputed domain name and undertook this action. Such use evidences bad faith. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, Frederick M. Abbott 1 The subject emails identify the sender as "Senior Associate" along with Complainant firm identifiers, although the sender is posing as a partner of the firm. 2 From a technical standpoint, "&” is not among the symbols that may be used in a domain name.
Sole Panelist
Date: June 19, 2020
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